Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. JP 2023-18518, filed on 02/09/2023.
Should applicant desire to obtain the benefit of foreign priority under 35 U.S.C. 119(a)-(d) prior to declaration of an interference, a certified English translation of the foreign application must be submitted in reply to this action. 37 CFR 41.154(b) and 41.202(e).
Failure to provide a certified translation may result in no benefit being accorded for the non-English application.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “heating device preheating” and “welding laser irradiation unit” in claim 1.
Because this claim limitation is being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it is being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this limitation interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
The welding laser irradiation unit of claim 1 will be interpreted as a “head that includes a galvano scanner … a galvano mirror mounted on the galvano scanner” (paragraph 15 of the specification) and equivalents thereof.
The heating device of claim 1 will be interpreted to be “configured as a halogen lamp. An irradiation unit 52 of the lamp 51 is formed with fused quartz.” (paragraph 22 of specifications) But, “may be configured as an arbitrary non-contact type or contact-type heating device. For example, the heating device 50 may be configured as a sheathed heater, a blower that blows warm air to the object OW, an induction heating device that heats the object OW by induction heating, or a laser irradiation unit that radiates laser light for preheating the object OW.” (paragraph 55 of specifications) and equivalents thereof.
Also, the examiner will interpret claim 4 as a device capable of moving the laser irradiation unit. “the target portion includes a start edge part that is welded at a start point of the movement route, and an end edge part that is welded at an end point of the movement route, and the heating device preheats the end edge part by heating the end edge part” does not provide any additional limitation since the target portion defined based on the object in claim 1 and the object is not positively recited.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 5 and 6 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 5, the phrase “the heating device is disposed overlapping at least part of the end edge part..” is considered indefinite because the object is not positively claimed in the invention, nor is a particular size or shape of the object identified. The definition of “End edge part” depends on the object as seen in claims 1 and 4: “target portion of the object” and “the target portion includes … an end edge part”. Examiner will consider any location of the heating device to read on the limitation. See MPEP 2173.05(b)II.
Regarding claim 6, the phrase “The cover member has higher heat resistance than heat resistances of the object and the irradiation unit” is considered indefinite because the object, and what it is composed of, is not positively claimed in the invention. Examiner will consider any cover member designed to function with a heat lamp to read on the limitation.
Further regarding claim 6, the claim recites the limitation "the laser welding device further comprises a cover member that is disposed between the object and the irradiation unit, and covers part of the irradiation unit, and the cover member has higher heat resistance than heat resistances of the object and the irradiation unit". There is a lack of antecedent basis for this limitation in the claim. “Irradiation unit” may be referring to “an irradiation unit of the lamp” of claim 6 or “a welding laser irradiation unit” of claim 1. Examiner will interpret “the irradiation unit” of claim 6 as “the irradiation unit of the lamp” for the rest of this office action.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 2 and 3 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
According to In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963), the inclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims (MPEP 2115). Neither claim 2 nor 3 further limits the device of claim 1 since there is nothing structurally different about the laser device between claims 1, 2, and 3. For example, calling the objects “plates” does not impart additional structure to the laser device. Furthermore, claim 1 refers to “welds an object to be welded including two or more members”, therefore, the device of claim 1 is already configured to weld at least two or more members together as set forth in claim 3.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-5 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Paizs (DE 102016221364 B3).
Regarding claim 1, Paizs teaches “a welding laser irradiation unit that faces the object, the welding laser irradiation unit welding the object by irradiating a target portion of the object with laser light”: “a laser beam is then conducted through a channel of the laser-guiding pressure piece 1. The laser beam is moved within the laser-guiding pressure piece 1 in such a way that it generates a weld seam between the two workpieces 2.” (paragraph 36 of the provided translation). The laser irradiation unit of Paizs is an equivalent structure to the head with Galvano scanner as it has the same function of irradiating a target with laser light.
Paizs also teaches “a heating device disposed on an opposite side to the welding laser irradiation unit seen from the object, the heating device preheating the target portion by heating the target portion from the opposite side.”: “In the next step, the workpieces 2 are heated by the induction coil 6. Control electronics set the heating power and the warm-up time to predetermined values. Once a predetermined target temperature or a predetermined heating time is reached, laser processing is started.” (paragraph 36 of the provided translation). This anticipates the heating device which may be configured as an induction heating device.
Paizs teaches the heating device being disposed on the opposite side to the welding laser irradiation unit in Figure 1.
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Figure 1
Regarding claims 2 and 3, claims 2 and 3 do not further limit claim 1, so as Paizs anticipates claim 1, Paizs also anticipates claims 2 and 3.
Regarding claim 4, Paizs says “The laser beam is moved within the laser-guiding pressure piece 1 in such a way that it generates a weld seam between the two workpieces” (paragraph 36 of provided translation) which reads on “device capable of moving the laser irradiation unit” of claim 4.
Regarding claim 5, claim 5 does not further limit claim 4, so since Paizs anticipates claim 4, Paizs also anticipates claim 5.
Claim(s) 1-5 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Suzuki et al. (JP 2021-079419 A), hereinafter “Suzuki”.
Regarding claim 1, Suzuki teaches “the welding apparatus 2 includes a laser irradiator 21, a preheater 22” (paragraph 24 of the attached translation). As shown in Figure 2, the laser irradiator and the preheater are disposed on opposite sides of the object to be welded. The laser irradiator 21 is an equivalent structure to the head with Galvano scanner as it accomplishes the function of irradiating a target with laser light. Further, Figure 2 shows the preheater 22 is an arbitrary non-contact type heating device that is capable of heating the object.
Regarding claims 2 and 3, claims 2 and 3 do not further limit claim 1, so as Suzuki anticipates claim 1, Suzuki also anticipates claims 2 and 3.
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Figure 2
Regarding claim 4, Suzuki teaches “the laser irradiator 21, the preheater 22, the post-heater 23, and the cooling-adjusting heater 24 are all simultaneously or individually moved in the weld direction ST2.” (paragraph 27 of the provided translation), which anticipates “device capable of moving the laser irradiation unit”.
Regarding claim 5, claim 5 does not further limit claim 4, so as Suzuki anticipates claim 4, Suzuki also anticipates claim 5.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Suzuki in view of Jeon (KR 10-0387752 B1) and as evidenced by Elsner (DE 102005042958 A1).
Suzuki teaches a preheater. However, Suzuki teaches the preheater being any of the following: “high-frequency induction heating device, a device that performs electrical heating using an electrode, a laser irradiation device, and an arc discharge device.” (paragraph 28 of the provided translation). Suzuki does not teach that the preheater is a lamp that emits infrared light on the object nor does Suzuki teach that there is a cover member on the lamp.
Elsner discloses a halogen radiant heater (“the device has a conventional laser beam source and a conventional halogen lamp as a heating element” (paragraph 23 of provided translation) for preheating to prevent “loss of ductility” (paragraph 2 of provided translation) during laser welding. Thus, it is known to use halogen lamps to preheat for welding.
Jeon teaches a ceramic-coated quartz halogen lamp. The ceramic consists of “ceramic paint made by manufacturing SiO2 coated on the surface of the quartz tube halogen lamp and spread therein as nanoparticles and adding Fe2O3, co, etc.” (page 1 of provided translation). Therefore, Jeon teaches a lamp with a cover member.
Jeon also teaches “far-infrared emissivity of the ceramic-coated halogen lamp is improved compared to the quartz tube halogen lamp” (page 5 of provided translation). This implies that Jeon’s lamp is capable of irradiating a target with infrared radiation.
Jeon teaches the ceramic coating results in “the heating temperature is significantly increased compared to a conventional quartz tube halogen lamp … no glare during work, thereby providing an optimal working environment to workers” (page 2 of provided translation of Jeon).
It would thus have been obvious to one of ordinary skill in the art to replace the preheater of Suzuki with the ceramic-coated quartz halogen heat lamp of Jeon to provide a high heating temperature and prevent glare.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-4 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 of copending Application No. 18/396962 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of 18/396962 anticipate the claims of the instant application, as shown in the table below.
Instant Application 18/398316
Reference Application 18/396962
1. A laser welding device that welds an object to be welded including two or more members comprising: a welding laser irradiation unit that faces the object, the welding laser irradiation unit welding the object by irradiating a target portion of the object with laser light; and a heating device disposed on an opposite side to the welding laser irradiation unit seen from the object, the heating device preheating the target portion by heating the target portion from the opposite side.
1. A laser welding device that welds an object to be welded including two or more conductors contacting each other, the laser welding device comprising:
a welding laser irradiation unit that faces a first face of the object, the welding laser irradiation unit welding the object by irradiating the object with laser light; and
a preheating device preheating the object, wherein
the preheating device includes
a first electrode that includes a first contact part contacting the first face, and
a second electrode that includes a second contact part contacting a second face of the object, the second face being on an opposite side to the first face, and
the preheating device heats at least part of the object by heat generated when a current flows in the object via the first electrode and the second electrode.
2. The laser welding device according to claim 1, wherein the object includes a first plate member and a second plate member as the members, and the first plate member and the second plate member are mutually laminated.
2. The laser welding device according to claim 1, wherein the object includes a first plate member and a second plate member as the conductors, and the first plate member and the second plate member are mutually laminated.
3. The laser welding device according to claim 1, wherein the object includes a first plate member and a second plate member as the members, the first plate member and the second plate member are aligned in a planar direction, and the welding laser irradiation unit welds between the first plate member and the second plate member
3. The laser welding device according to claim 1, wherein the object includes a first plate member and a second plate member as the conductors, the first plate member and the second plate member are aligned in a planar direction, and the welding laser irradiation unit welds between the first plate member and the second plate member.
4. The laser welding device according to claim 1, wherein the welding laser irradiation unit is configured to weld the object while moving an irradiation position of the laser light on the object along a predetermined movement route, the target portion includes a start edge part that is welded at a start point of the movement route, and an end edge part that is welded at an end point of the movement route, and the heating device preheats the end edge part by heating the end edge part.
4. The laser welding device according to claim 1, wherein the welding laser irradiation unit is configured to weld the object while moving an irradiation position of the laser light on the object along a predetermined movement route, a portion to be welded in the object includes a start edge part that is welded at a start point of the movement route, and an end edge part that is welded at an end point of the movement route, and the first electrode and the second electrode are disposed such that the end edge part is heated by the heat.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 5 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 4 of copending Application No. 18/396962 in view of Suzuki.
18/396962’s claim 4 includes the limitations of 18/396962’s claim 1, which includes the limitation “a welding laser irradiation unit … irradiating the object with laser light” which anticipates “the welding laser irradiation unit irradiates a plate surface of the object with the laser light”. Further, 18/396962’s claim 4 includes “the first electrode and the second electrode are disposed such that the end edge part is heated by the heat” which anticipates “the heating device is disposed overlapping at least part of the end edge part when seen from a plate thickness direction of the object”. However, 18/396962’s claim 4 does not specify that the object to be welded has a plate shape. Suzuki teaches using an electrode as to preheat a sheet before laser welding (“The preheating heater 22 … Examples of such a device include a high-frequency induction heating device, a device that performs electrical heating using an electrode” paragraph 28 of provided translation). Therefore, claim 4 of 18/396962 in view of the teachings of Suzuki would render obvious claim 5 of this application.
Claim 6 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 of copending Application No. 18/396962 in view of Elsner and Jeon.
Elsner teaches a halogen lamp can be used as a preheater for laser welding. Jeon teaches a halogen lamp with a ceramic coating with high heat resistance (the specification defines heat resistance as glass transition temperature or melting point). 18/396962’s claim 7 inherits the limitations of 18/396962’s claim 1. 18/396962’s claim 1 teaches the use of electrodes for preheating and 18/396962’s claim 7 teaches that the electrodes have a higher melting point than the object to be welded. The electrode of 18/396962 and the halogen lamp of Jeon are analogous as shown by Elsner.
Therefore, claim 7 of 18/396962 in view of the teachings of Elsner and Jeon would render obvious claim 6 of this application.
These are provisional nonstatutory double patenting rejections because the patentably indistinct claims have not in fact been patented.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Wang (CN 114713981 A) teaches a laser welding machine with preheating. Sekimoto (JP 2010184248 A) teaches preheating to prevent heat stress during laser welding. Ranish (US 2019/0385833 A1) teaches a lamp to provide heat radiation in a rapid thermal processing chamber. Zhang et al. (CN 114367740 A) teaches induction heaters under a welding track to prevent stress concentrations. Yu et al. (CN 106346133 A) teaches a welder with a preheating station. Casper et al. (WO 2020/043419 A1) teaches a moving induction heater.
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/M.H.C./Examiner, Art Unit 3761 /EDWARD F LANDRUM/Supervisory Patent Examiner, Art Unit 3761
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